The Oxford Asset Management Company Limited v Domains by Proxy LLC /

WIPO Case No. D2022-0859

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Oxford Asset Management Company Limited v. Domains by Proxy LLC /
Randall Gomez, ITS International

Case No. D2022-0859

1. The Parties

The Complainant is The Oxford Asset Management Company Limited, United Kingdom, represented by

Boult Wade Tennant, United Kingdom.

The Respondent is Domains by Proxy LLC, United States of America (“United States” or “US”) /

Randall Gomez, ITS International, United States.

2. The Domain Name and Registrar

The disputed domain name <oxford-trader.com> (the “Domain Name”) is registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2022.

On March 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 25, 2022. In accordance with the Rules,

paragraph 5, the due date for Response was April 14, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 19, 2022.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 25, 2022. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

On April 25, 2022, the Complainant submitted a Supplemental Filing to the Center.

4. Factual Background

The Complainant is an investment manager operating in the financial services sector. The Complainant launched in 2004 as a service provider to a number of associated funds operating in the regulated financial markets. The Complainant is regulated and known to the key regulatory authorities in both the United Kingdom and the US.

The Complainant owns numerous trademark registrations that incorporate “oxford” around the world, such as

United Kingdom Trade Mark No. 906758511, OXFORD ASSET MANAGEMENT, registered on December
11, 2008, in class 36; European Union Trade Mark No. 6758511, OXFORD ASSET MANAGEMENT,
registered on December 29, 2008; and, United States Trade Mark No. 5528184, OXFORD ASSET
MANAGEMENT, registered on December 11, 2008, in class 36.

The Domain Name was registered on September 14, 2021. As evidenced in the Complaint, and at the time of drafting the Decision, the Domain Name resolved to a Spanish language website purporting to offer financial services, including investment services in stock and cryptocurrency markets.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain

Name is confusingly similar to its trademark. The Domain Name incorporates parts of the Complainant’s

registered trademark. The Complainant acknowledges that “Oxford” is a geographical location in the United

Kingdom. However, the Domain Name claims to be operating in the same commercial sector as the Complainant and the Respondent targets the Complainant. The Respondent passes itself off as the

Complainant, inter alia by listing the Complainant’s company name, address and regulatory identity number

on its webpage.

The Complainant asserts that there is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods. On the contrary, the

Complainant submits that the Respondent’s use of the Domain Name is only to mislead consumers and

trade off the Complainant’s trademark. The Respondent’s website is likely to be phishing or other form of

illegitimate activity.

Finally, based on the use of the Domain Name, the Complainant submits that the Respondent was aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Respondent has registered and is using the Domain Name in bad faith by attempting to attract, for commercial gain, Internet users to its website, through creating a likelihood of confusion with the Complainant.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

C. Complainant’s Supplemental Filing

Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the

proceeding “with due expedition”. UDRP panels may accept supplemental filings to consider material new

evidence or provide a fair opportunity to respond to arguments that could not reasonably have been

anticipated by the Complainant. In this case, the Complainant’s Supplemental Filing offers additional

evidence of the Respondent’s bad faith use. Based on the evidence already presented in the case file, the

Panel finds it unnecessary to take into consideration the Complainant’s Supplemental Filing.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark OXFORD ASSET MANAGEMENT. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this

instance, the Domain Name incorporates the “oxford” element of the Complainant’s trademark with the
additional term “trader”. While not a replacement as such for the typical side-by-side comparison, further to
the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview

3.0”), section 1.7, “the broader case context such as website content trading off the complainant’s reputation”

may support a finding of confusing similarity. Based on the use of the Domain Name, which features the

Complainant’s company name, address, and regulatory identity number on its webpage, it is clear that the

Respondent targets the Complainant. Under these circumstances, the Panel takes note of the content of the website to confirm confusing similarity, see WIPO Overview 3.0, section 1.15.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top
Level Domain (“gTLD”), see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence in the case file that the Respondent has used or made demonstrable preparations to

use the Domain Name in connection with a bona fide offering of goods. On the contrary, the Respondent’s use of the Domain Name trades off the Complainant’s trademark for commercial gain. Under the webpage

to which the Domain Name resolves, it is stated that “Oxford Trader is a regulated broker”, but then recites

the Complainant’s regulatory identity number and the Complainant’s full corporate name (i.e., Oxford Asset

Management LLP), reinforcing the Respondent’s intent to create user confusion as to the Domain Name’s association. As such, the Respondent’s use of the Domain Name indicates bad faith, rather than a bona fide

offering of goods or services.

The Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

The Respondent’s use of the Complainant’s name, address and regulatory identity number on the

Respondent’s webpage clearly indicates that the Respondent knew of the Complainant. Moreover, the

Respondent has not provided any evidence of good-faith use.

The Respondent has tried to create a false association between the Domain Name and the Complainant’s

trademark, to attract Internets users to its website for commercial gain by creating a likelihood of confusion

with the Complainant’s mark, perhaps even for fraudulent use, see WIPO Overview 3.0, sections 3.1.4

and 3.4.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <oxford-trader.com> be transferred to the Complainant.

/Mathias Lilleengen/

Mathias Lilleengen

Sole Panelist
Date: May 3, 2022